24 January 2024

EPO to accelerate opposition proceedings in view of corresponding infringement OR revocation actions

The EPO has announced in the Official Journal that it will accelerate opposition proceedings when it is informed of infringement or revocation proceedings related to the same patent pending before the Unified Patent Court or a national court of a member state in the interest of “legal certainty and procedural efficiency, as well as high quality and uniformity in the European patent system”.

This is a change of practice as previously, acceleration of opposition proceedings at the EPO was only available when there was a parallel infringement action pending before the national court or the competent authority of a contracting state. The latest version of the Guidelines, which came into force on 1 March 2023, was updated to include the Unified Patent Court (UPC). As such, the new change is that this also applies to revocation proceedings. The changes to the EPO’s approach will result in acceleration being applied to a small number of EPO oppositions where there is a co-pending revocation action but no corresponding claim for infringement.

The request for acceleration can be filed by the body overseeing the infringement or revocation action, or, importantly, by a party to the parallel opposition proceedings.

The effect of a granted request for acceleration is that Opposition Divisions will “make every effort to issue the next procedural action … within three months”. As the EPO has a strict approach to granting extensions during oppositions, timelines should be significantly reduced. Oral Proceedings may also be rescheduled to an earlier date. Whilst there are no requirements placed on the Boards of Appeal by this change, it is still hoped that the time to a final decision in such circumstances should still be reduced.

The change in practice could be used tactically by some parties. For example, a revocation action could be filed at the UPC, or at a national court which may have a lower cost, in order to force the acceleration of opposition proceedings. As under previous practice, requests for acceleration could only be made based on infringement actions, only Patentees could make use of such situations. Now Opponents also have this option.